On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 100397
Time of Filing 2012-02-21 09:55:27
Disputed domain name ECCOSTOVLER.NET
Case Administrator
Name Tereza Bartošková
Complainant
Organization ECCO Sko A/S
Authorized Representative
Organization Chas. Hude A/S
Respondent
Name huangchen
Other Legal Proceedings
The Panel is not aware of any other legal proceedings that are pending or decided and that relate to the disputed domain name.
Identification of rights
Complainant has cited multiple trademarks "ECCO" registered amongst others for footwear, including Community Trademark Reg. Nos. 001149871 and 179317; U.S. Reg. No. 1,935,123; Canadian Reg. No. 280654; Australian Reg. No. 375267A; and Chinese Reg. No. 208743.
Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

Language
Notwithstanding the fact that it is not clear whether the Registration Agreement is in English or Chinese (the registrar verification being unclear on this point), for the following reasons the Complainant respectfully request that the language of the proceedings be English:

The text displayed on the Respondent's website is partly in Danish and partly in English. In particular, Complainant filed evidence whereas the “Return & Exchange Policy”, the “FAQ” page and a part of the text displayed on the website are in English. These circumstances show that the Respondent has a good command of the English language and would not be disadvantaged if the proceedings were conducted in English.

Legal Basis:
The disputed domain name contains Complainant's trademark ECCO in full. The addition of the generic term STOVLER does not preclude but even enhance the risk of confusion / likelihood of association with the Complainant’s trademark and company name. Therefore, the disputed domain name is confusingly similar to Complainant's trademark (Policy, Par. 4 (a)(1)).

Respondent has no rights in the trademark ECCO and is not a reseller/licensee of Complainant, use of the trademark ECCO by Respondent has never been authorized by Complainant. Accordingly, Respondent has no rights or legitimate interests in respect of the domain names (policy, Par. 4 (a)(11)).

The fact that the Complainant’s trademark ECCO constitutes the dominant element of the disputed domain name, and that the Complainant’s logo and pictures are used by the Respondent without the rightful owner’s authorization constitute strong evidence of the fact that the Respondent is attempting to divert Internet users to his domain name by creating a likelihood of confusion with the Complainant’s trademarks, company name and domain names. The Respondent’s use of the trademark ECCO to sell counterfeit/fake ECCO shoes is further evidence of the abusive registration and use of the disputed domain name.

For all these reasons, Complainant finds that the disputed domain name was registered and is used in bad faith (Policy, Par. 4(a)(iii)).

The CAC decision in the Case No. 100357, ECCO-STOVLER.COM, concerning an almost identical domain name, as well as the following decisions, support the case:

CAC:
Case No. 100259, ECCOSHOESSHOP.COM
Case No. 100278, ECCOSHOESUK.NET
Case No. 100311, UKECCOSHOES.NET
Case No. 100321, ECCOSKOUDSALG.COM
Case No. 100312, ECCOSALEONLINE.COM
Case No. 100305, ECCOONLINESALE.COM
Case No. 100327, ECCOONLINESALEUSA.COM

WIPO:
Case No. D2010-2038, ECCODISCOUNT.COM
(http://www.wipo.int/

Case No. D2010-1443, ECCOBRANDSHOP.COM, ECOOSHOP.COM
http://www.wipo.int/

Case No. D2010-1113, 51ECCO.COM
(http://www.wipo.int/

Case No. D2010-0650, ECCOSHOESOUTLET.COM, ECCOSHOESOUTLETS.COM, ECCOSHOESOUTLETS.NET
(http://www.wipo.int/
 
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.


Rights
The Complainant has, to the satisfaction of the Panel, shown that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy).
Bad faith
The Complainant has, to the satisfaction of the Panel, shown that the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).
Procedural Factors
1. The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

2. With regard to the language, the Panel exercises its authority pursuant to Paragraph 11(a) of the Rules, having regard to the circumstances of the administrative proceeding, to allow these proceedings to occur in English.

In this regard, the Panel notes that the registrar verification did not clearly confirm wether or not the language of the registration agreement is Chinese or English. Furthermore, Complainant has stated that the FAQ page and the "Return & Exchange Policy" under the disputed domain name is in English and the text of the website is partly in English too. These circumstances show that the Respondent has a good command of the English language and would not be disadvantaged if the proceedings were conducted in English. Allowing this proceeding to occur in English is consistent with numerous decisions under the UDRP, i.e. ECCO SKO A/S v. linlin, CAC Case No. 100278 (transfer of <eccoshoesuk.net>) and ECCO SKO A/S v. linmaojian CAC Case No. 100357 (transfer of <ECCO-STOVLER.COM>, <ECCOUDSALG.NET>).
Principal Reasons for the Decision
1. Based on the undisputed multiple trademark registrations cited by Complainant (listed above) as well as previous relevant UDRP decisions in which the same trademarks were at issue, the Panel is convinced that Complainant has rights in and to the trademark ECOO for use in connection with footwear. See, e.g. ECCO SKO A/S v. linmaojian CAC Case No. 100357 (transfer of <ECCO-STOVLER.COM>, <ECCOUDSALG.NET>) and ECCO SKO A/S v. linlin, CAC Case No. 100278 (transfer of <eccoshoesuk.net>).

2. The disputed domain name is identical confusingly similar to the ECCO trademark, as according to the Complainant's undisputed allegation, the term "STOVLER" is a misspelling of the Danish descriptive term “støvler” meaning “boots”. Accordingly, this word actually increases the confusing similarity between the Disputed Domain Name and Complainant’s trademark ECCO, see e.g. ECCO SKO A/S v. linmaojian CAC Case No. 100357 (transfer of <ECCO-STOVLER.COM>, <ECCOUDSALG.NET>) and ECCO Sko A/S v. Jacklee, WIPO Case No. D2011-0800 (transfer of <eccoshoesaustralia.com>).

3. Furthermore, as a result of Complainants’ allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has also proven the second element of the UDRP. Indeed, Complainant has stated that Respondent has no rights in the trademark ECCO and is not a reseller/licensee of Complainant, that use of the trademark ECCO by Respondent has never been authorized by Complainant.

4. Finally, the Panel is satisfied that Complainant has proven the third element of the UDRP and that bad faith exists pursuant to paragraph 4(b)(iv).

Complainant has stated that the Respondent uses Complainant’s logo and pictures without the rightful owner’s authorization. This constitutes strong evidence of the fact that the Respondent is attempting to divert Internet users to his domain name by creating a likelihood of confusion with the Complainant’s trademarks, company name and domain names. The Respondent’s use of the trademark ECCO to sell counterfeit/fake ECCO shoes "is strong evidence of bad faith" (see ECCO SKO A/S v. linmaojian CAC Case No. 100357 (transfer of <ECCO-STOVLER.COM>, <ECCOUDSALG.NET> with further references).
Decision
For all the following reasons, the Complaint is Accepted
and the disputed domain name(s) are to be
ECCOSTOVLER.NET Transferred to ECCO Sko A/S
Panellists
Name Dr. Tobias Malte Müller
Date of Panel Decision 2012-04-02
Publication of the Decision
Publish the Decision